October 19, 2022 | Techdirt

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from emoji-emoji-emoji department

Emoji Co. GmbH has trademarks in the dictionary word “Emoji”. They are primarily a licensing body and their listings cover a wide range of classes: “from clothing items and snacks to ‘orthopedic foot pads’ and ‘[p]safety restraint devices for patients. “” (Raise your hand if you’ve ever seen Emojico brand patient safety restraints). Indeed, the court essentially questions the entire basis of Emojico’s licensing business, saying:

Given the ubiquity of the word “emoji” as a reference to the various images and icons used in electronic communications, it is especially important for the claimant to present evidence demonstrating that the term is also known as the claimant’s identifier as source of goods. ….Other than his words, Plaintiff offers no evidence demonstrating, for example, that consumers actually associate Plaintiff with emoji products such as those offered for sale by Defendants

(The lack of secondary meaning seems to be a major problem with the Emojico case, one of many issues that the court spots and then essentially ignores.)

As I’ve documented before, Emojico probably sued around 10,000 defendants for trademark infringement. Many of the accused are small Amazon sellers (often from China) selling items featuring emojis, which Emojico claims are infringing by using the term “emoji” in their product listings. Defendants often do not appear in court, leaving decisions vulnerable to obvious errors that will never be appealed.

Without the defendants in court to defend themselves, the court decides that the defendants violated Emojico’s trademark rights and grants a permanent injunction. The judge then moves on to Emojico’s claim for statutory damages, including Emojico’s claim that the violation was willful. The court says so

finds that the nature of Plaintiff’s mark is relevant to the will inquiry, as it raises concern that many people may innocently use the word “emoji” in commerce without knowledge of Plaintiff’s intellectual property rights. Indeed, the various images and icons commonly referred to as “emojis” have become a staple of modern communication, such that the term “emoji” is even defined in many dictionaries.

This means that the term “emoji” is generic compared to dictionary definitions and the legal empire of Emojico should collapse. Trademark registrations discourage this outcome.

Otherwise, “emoji” is at most descriptive of the goods in question, so there should be an airtight descriptive fair use defense. The court says:

Fair use, however, is an affirmative defense, and none of the defaulting defendants appeared to assert it. But the Court finds that the principle underlying the defence, “that no one should be able to appropriate descriptive language through the registration of a mark”, is relevant to its analysis of will . If Plaintiff’s Mark can legitimately be used for a substantial number of descriptive purposes, this suggests that a particular Defendant might not have knowingly or recklessly ignored Plaintiff’s rights.

This is how the court avoids the elephant in the room. Defendants did not “disregard plaintiff’s rights” as it is entirely permissible to use “emoji” in a descriptive sense of fair use. But the court didn’t consider descriptive fair use in outright declaring infringement because…well, I don’t know why not, other than this judge who apparently thinks courts can’t raise obvious defenses and screaming sua sponte?

This next passage may require fabrics:

many defendants use the word “emoji” to describe a product that represents one of many digital icons commonly used in electronic communications. For example, a defendant offered for sale a “Fire” emoji jewel encrusted pendant as “2.00 Ct. Men’s Round Diamond Fire Emoji Charm Pendant in 14k Yellow Gold.” Especially since “Emoji” was used in conjunction with the word “Fire”, it would be reasonable to conclude that this particular defendant honestly believed that he was using the word “Emoji” to identify the product as representing a specific emoji, at know fire. Emoji. Another defendant offered for sale a smiley face emoji pillow with the listing saying “1PC 32cm Emoji Smiley Emoticon Pillow Plush Toy Doll Pillow Soft Sofa Cushion”. Again, the word emoji is used to describe the product as depicting a smiling emoji. Additionally, the list uses another word, “Emoticon”, which is usually associated with digital representations of facial expressions. The inclusion in the listing of a word describing a concept similar to an emoji suggests that the two words are simply used to describe the product offered.

[We now know what happens if you yell “Fire Emoji” in a crowded online marketplace. TRADEMARK INFRINGEMENT. 🔥]

The court apparently fully understands the problem. Anyone looking at the listings in question would instantly interpret “emoji” as describing the physical attributes of the product – AS TRADEMARK LAW PERMITS. Yet somehow the court creates a fair use defense of Schrödinger – uses may be descriptive use of the mark for the purpose of damages, but apparently not so obviously to resolve the counterfeit. Damn it.

How messed up? The court says:

The plaintiff suggests that anyone selling a product featuring a familiar emoji is prohibited from using the single word that most closely describes the image depicted. The plaintiff’s right cannot be so extensive.

💯 How did the court again find an infringement?

After questioning the foundation of Emojico’s trademark empire and coming to the obvious conclusion that the defendants engaged in descriptive fair use, the court nevertheless awards $25,000 in damages per defendant. The court treats this as benevolence towards the defendants:

This figure is lower than the compensation sought by Plaintiff, as it takes into account the many possible fair uses of Plaintiff’s mark as well as Plaintiff’s failure to present sufficient evidence regarding many key factors relevant to the determination of damages- legal interests. On the other hand, the reward is greater than the minimum permitted by § 1117(c)(1) in light of the need for deterrence, the fact that the defendants’ unlawful conduct occurred online, and plaintiff’s evidence of its licensing efforts and efforts to enforce its trademark rights.

So, has justice been done in this case? On the one hand, it’s all for show, as Emojico will almost certainly not receive any dollars from this compensation. On the other hand, it’s a chilling reminder of how bad things can go in default proceedings, when the court only hears the plaintiff’s unrebutted defence. The real victims of this court’s error and Emojico’s litigation campaign are consumers who love emoji-themed items but will find it increasingly difficult to acquire these products in online marketplaces. because Emojico keeps legal sellers out of the marketplace or forces sellers to use terms. that consumers do not recognize. Even though the defendants did not present the arguments, the judge should have listened to her instincts and intervened on behalf of the consuming public. All of us, except maybe Emojico and its lawyers, are poorer because it didn’t.

Republished with permission from the Technology & Marketing Law blog.

Filed Under: emoji, fair use, generic, trademark

Companies: emojico

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